Triomed (Pty) Ltd v Beecham Group plc and Others

• Judge: Smit J
• Judgment Date: 19 December 2000
• Citation: 2001 (2) SA 522 (T)
• Docket Number: 5869/2000
• Counsel: L G Bowman SC (with G Morley) for the applicant. C E Puckrin SC (with J N Cullabine) for the first and third respondents.
• Court: Transvaal Provincial Division

Smit J:

This application concerns the H registration and alleged infringement, passing off and unlawful competition of a trade mark.

First respondent is the registered proprietor of a trade mark, registration No 95/13154, registered in class 5 in respect of antibiotics. Applicant brought an urgent application to expunge the said trade mark. First respondent, in addition to opposing the relief I sought by applicant, brought a counter-application in terms of which relief was sought based on trade mark infringement, passing off, copyright infringement and unlawful competition. First respondent also joined third respondent as a co-applicant in reconvention insofar as it was alleged that third respondent too has a claim against applicant based on unlawful competition. J

Smit J

The first respondent is also the registered proprietor of the A registered trade mark Augmentin, No 67/02550 registered in class 5 in respect of pharmaceutical preparations and substances. First respondent also claims infringement by applicant of this mark.

The application was initially heard on 10 and 11 May 2000 but B the main and counter-application were referred for the hearing of oral evidence. Professor Van Oudtshoorn and Mr Malcolm Levy gave evidence at the hearing on behalf of the applicant concerning the issues raised in the main application and the issues of alleged trade mark infringement and passing off in the counter-application. The respondents C tendered the evidence of Mr J d W Higgo and Ms Maryanne Thom.

At the outset I should indicate that I had the advantage of well-considered arguments presented by Mr Bowman and Mr Puckrin on behalf of the respective parties. In what follows hereinafter I shall make ample use of these arguments.

Main application for expungement D

In the main application an order is sought expunging trade mark 95/13154 in class 5 from the register of trade marks. The trade mark is registered in respect of antibiotics and 'consists in the shape and curvature configuration of a tablet substantially as shown in the representation'. The representation indicates that the tablet has an E elliptical shape, a curvature which is bi-convex and a band around its circumference. The trade mark was registered with respect to all dimensions of the tablet and in all colours.

The applicant and the first respondent are trade competitors. The F applicant is importing, distributing and selling in South Africa a generic equivalent for an antibiotic which the first respondent sells under the trade mark Augmentin. The first respondent's antibiotic is sold in tablet form and the tablets bear the shape depicted in the trade mark under consideration as well as the mark Augmentin and is sold in sizes of 375mg and 625mg. The applicant has G sold and distributed an amoxcycillin antibiotic under its trade mark Maxcil. The applicant has adopted the trade mark Augmaxcil for its generic equivalent of Augmentin and the shape of its tablet is for all practical purposes the same shape of tablet as that used by the first respondent for its Augmentin antibiotic. The first respondent was the originator of an antibiotic consisting of a mixture of H amoxcycillin and clavulanic acid.

It is applicant's case that the first respondent is endeavouring to monopolise a shape of tablet which other pharmaceutical manufacturers or distributors, including applicant, are using or may reasonably want to use in the course of the pharmaceutical trade. The I trade mark in question, according to applicant, is incapable of distinguishing the first respondent's pharmaceutical products, including antibiotics, from those of other pharmaceutical manufacturers. According to first respondent, however, it is not seeking to obtain a monopoly in the shape of a tablet which others are using or may want to use. 'The trade mark in question J

Smit J

is capable of distinguishing the first respondent's product for A antibiotics from those of other similar products, and has become distinctive in relation to antibiotics.'

The Court's general powers to rectify entries in the trade mark register are set out in s 24(1) of the Trade Marks Act 194 of 1993, hereinafter referred to as the Act. The relevant portions of the section provide as follows: B

'24(1) In the event of . . . an entry wrongly made in or wrongly remaining on the register . . . any interested person may apply to the Court . . . for the desired relief, and thereupon the Court . . . may make such order for . . . removing . . . the entry as it . . . may deem fit.'

I am satisfied in the present matter that the applicant is an C 'interested person' as provided for in s 24(1) and that it consequently has locus standi to bring the application. (See Danco Clothing (Pty) Ltd v Nu-Care Marketing Sales and Promotions (Pty) Ltd and Another 1991 (4) SA 850 (A) at 855B - 856B.)

Applicant's grounds for expungement D

Applicant relies on various grounds on which the expungement of the trade mark in question is sought. I intend considering hereinafter seriatim the grounds relied on by applicant. In doing so I keep in mind that some of the various grounds relied on by applicant are overlapping and in deciding the issue I will consider the cumulative effect of the various grounds. E

Section 9 of Act 194 of 1993

Section 9 of the Act sets out the requirements for registrable trade marks and provides: F

'9(1) In order to be registrable, a trade mark shall be capable of distinguishing the goods or services of a person in respect of which it is registered or proposed to be registered from the goods or services of another person either generally or, where the trade mark is registered or proposed to be registered subject to limitations, in relation to use within those limitations.

(2) A mark shall be considered to be capable of distinguishing within G the meaning of ss (1) if, at the date of application for registration, it is inherently capable of so distinguishing or it is capable of distinguishing by reason of prior use thereof.'

Applicant's contentions regarding the requirements of s 9 are inter alia summarised as follows in its founding papers: H

'Mark 95/13154, as represented in annexure GH3, simply consists of an oval shaped tablet, such as that commonly found in use in the pharmaceutical industry. It bears no distinguishing features or characteristics by which the public would recognise the shape of the tablet as constituting a trade mark and, as will appear hereafter, the shape is not recognised as a trade mark by pharmacists or members of the public. It is simply devoid of any inherent distinctive character, I apart from any issues of functionality to which I shall revert later in this affidavit.'

Not so, say respondents. The shape and configuration of the tablets are widely recognised and known and the shape in question is distinctive and was designed to be distinctive. The whole of the mark must be considered, so respondents contend. It is impermissible to disect the J

Smit J

mark into its components and to contend that the mark A contains, inter alia, an 'ellipse' or other similar oval shape.

Section 10(2)(a) of Act 194 of 1993

Whereas s 9 of the Act deals with registrable trade marks, s 10 B sets out those marks which shall not be registered as trade marks. Applicant relies as one of the grounds for expungement on the provisions of s 10(2)(a), which provides that a mark which is not capable of distinguishing within the meaning of s 9 shall not be registered as a trade mark or, if registered, shall be liable to be removed from the register.

It is clear that the mark must have characteristics which render it C factually capable of distinguishing. No amount of use will render marks distinctive which factually have no distinguishing characteristics. See British Sugar plc v James Robinson & Sons Ltd [1996] RPC 281 (Ch) at 305 lines 37 - 50; Philips Electronics NV v Remington Consumer Products Ltd [1999] RPC 809 (CA) at 817 line 43 - 818 line 37.

However, the proviso to s 10(2) provides that a mark shall not be D refused registration or liable to be removed from the register if at the date of the application for registration or at the date of an application for removal, as the case may be, it has in fact become capable of distinguishing within the meaning of s 9 as a result of use made of the mark.

Consequently the registration of the mark offends against the E provisions of s 10(2)(a) of the Act if the trade mark was not inherently capable of distinguishing or capable of distinguishing, by reason of use prior to the date of application for registration, at the date of the application for its registration. If thereafter the trade mark did not become capable of distinguishing through use within the meaning of s 9 and accordingly did not fall within the proviso to F s 10 of the Act, it in addition became a mark which wrongly remained on the register. If as at the date of its registration the trade mark was capable of distinguishing through use but nevertheless thereafter became not capable of distinguishing at the time the expungement application was brought, then the mark is wrongly remaining on the G register within the meaning of s 24(1) as it offends against the provisions of s 10(2)(a) of the Act.

Both under the repealed Act and the present Trade Marks Act post-registration events were held to have been relevant to the continuing validity of a trade mark. (See Luster Products Inc v Magic Style Sales CC 1997 (3) SA 13 (A) at 22F - H and Cadbury (Pty) Ltd v Beacon Sweets & Chocolates (Pty) Ltd and H Another 2000 (2) SA 771 (SCA) at 777D - 778B.)

In the Cadbury case Harms JA at 778G - H, in determining whether a word mark was capable of distinguishing, posed the question whether 'Liquorice Allsorts is the name of the product (a...